Hungary: Not every fairy tale has a happy ending: the story of the Gömböc 3D trademark application

Once upon a time, two eminent Hungarian scientists made a mathematical breakthrough. They developed the first convex, homogeneous, mono-monostatic object, which they named the "Gömböc" after the famous Hungarian folk character. The Gömböc always returns to its single stable equilibrium point no matter how you put it down, without using any weights. The Gömböc also has one unstable equilibrium. It is possible to balance the body in this position, but the slightest disturbance makes it fall.

Image source: EUIPO¹

As with any other invention, the creators of the Gömböc have sought to give it the fullest possible industrial property protection. This ultimately led to a lengthy and turbulent procedure that even reached the European Court of Justice and was recently decided by the Supreme Court of Hungary (Curia).

Source of the issues

Given the new and individual shape of the Gömböc, the creators clearly needed to obtain design protection. They succeeded in obtaining a European community design (the so-called "RCD") for the whole of the European Union in 2007². But RCDs only grant exclusive rights for a limited period, up to 25 years from the filing date. After that, the design becomes public domain.

However, there is another form of protection for the external design of products that is not limited in time: the three-dimensional trademark. In 2015, the creators of the Gömböc filed a 3D trademark application with the Hungarian Intellectual Property Office ("HIPO") for "ornaments" and "toys".

The HIPO, however, rejected the application, as it considered it to be excluded from trademark protection under the applicable trademark laws. According to the Hungarian Trademark Act³ – in line with European law – the exterior design of the product is excluded from trademark protection if it exclusively

• consists of the shape or other characteristic of the goods which is necessary to obtain the intended technical result: in this case, the HIPO argued that the shape of the Gömböc as a toy consists exclusively of such characteristics, because it can always "stand up" and thereby function as a toy due to its shape, i.e. the technical content determines the shape. This has become known by the relevant public because of the high level of press coverage, so the relevant public is aware of the link between the shape and the technical result.
• consists of a shape or other characteristic which gives the goods substantial value: according to the HIPO, the value of the Gömböc as an ornament is determined by its striking design, which gives it substantial value.

The first instance court, while agreeing with the rejection of the application, reasoned it differently. In the case of the Gömböc as a toy, it held that it is not possible to consider whether and how the relevant public perceive the link between the shape of the good and the technical result. The existence or non-existence of such a link is an objective, technical fact. As an ornament, the first instance court held that the substantial value of the Gömböc lies not merely in its aesthetic qualities, but in the underlying discovery, the "tangible mathematics", which is embodied in the shape and gives it substantial value.

The court of appeal also agreed with the rejection of the application but came up with a third explanation. In its view, the assessment should be limited to the data contained in the application for registration. From the single photograph contained in the application it is not even possible to establish with certainty that it indeed depicts the Gömböc. The photograph "depicts a beautiful, clear, serene shape from a single angle". This shape gives substantial value to the goods and the application must therefore be rejected on this ground alone.

Thus, the various forums have taken very different views as to whether, in applying the ground for refusal, only the graphic representation in the application can be taken into account, or whether and to what extent the perceptions and knowledge of the relevant public can also be assessed. The Curia, which reviewed the final decision, therefore referred the matter to the Court of Justice of the European Union (CJEU) for a preliminary ruling.

The position of the CJEU – judgment in case C-237/19

The Curia essentially sought answers to three questions:

• In order to establish whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, the assessment must be limited to the graphic representation of the sign or should other information, such as the perception of the relevant public, also be taken into account?

The CJEU introduced a two-step test: the knowledge of the relevant public can only play a role in identifying the essential characteristics of the sign, i.e. the characteristics of the sign cannot be established solely from the pictures and description contained in the application. However, the existence of the link between the shape of the good and the technical result can only be based on objective information, and the perception of the relevant public alone is not sufficient in this context.

• Can the application be refused if it can be established solely based on the relevant public's perceptions/knowledge that its shape gives substantial value to the product?

The CJEU has also introduced a two-step test: the knowledge of the relevant public can play a role in identifying the essential characteristics of the sign. However, it can be drawn only from objective and reliable evidence that the consumer's decision to buy the products in question is determined to a very large extent by that characteristic.

• Can an application be automatically refused because the shape of the product is already protected by design law or if it consists exclusively of the shape of a decorative object?

The short answer from the CJEU is that the application cannot be rejected on this ground alone.

The decision of the Curia (of Hungary)

The Curia finally put an end to the saga in its decision published under number BH2022.75. It applied the guidance of the CJEU to the facts of the case and arrived at the following conclusions:

• The Gömböc as a toy is excluded from trademark protection

According to the Curia, the relevant public clearly recognises that the trademark application is for the shape of the Gömböc. The essential characteristics of the sign are known to the relevant public: a mono-monostatic object of a particular shape, which is convex, homogeneous and always returns to its stable equilibrium. It is not possible to determine all these essential characteristics from the application alone, and in this context, it is necessary to take into account the knowledge of the relevant public.

Nevertheless, whether the shape and material of the Gömböc are solely intended to ensure that the Gömböc always returns to its stable equilibrium can only be determined from objective sources. This does not imply that an expert evidence-taking would be necessary in every case. The description in the trademark application, scientific publications, catalogues and websites describing the technical function of the product can also be regarded as objective and reliable information. In this context, it should be noted that neither the CJEU nor the Curia has clarified under which conditions a website can be considered a reliable and objective source of information. Hungarian and international case law is sceptical, for example, about online encyclopaedias that can be edited by anyone.

In the present case, however, there was no doubt based on objective information that all the essential characteristics of the Gömböc were designed to achieve the intended technical result. The Gömböc can function as a toy due to the technical result achieved by the shape and therefore the shape is excluded from trademark protection with respect to "toys".

• The Gömböc is also excluded from trademark protection as an ornament

As regards the Gömböc as an ornament, the first step in the analysis is the same as in point (i) above. The sign applied for is the shape of the Gömböc and its essential characteristics are known by the relevant public. The question is, which of the characteristics give the Gömböc its substantial value?

According to the HIPO and the court of appeal, the value of the Gömböc as a decorative object lies in its unique, striking design. The Curia, however, shared the view of the first instance court that the substantial value of the Gömböc lies in the science behind it, the tangible mathematics. Based on objective, publicly available sources, the Curia found that the decision of the relevant public to buy the Gömböc is largely determined by the scientific and symbolic value of the shape. Therefore, the unique shape of the Gömböc cannot be protected as a trademark for "ornaments".

Epilogue

Although the trademark application was unsuccessful for the reasons set out above, the case has removed several uncertainties in relation to the protectability of three-dimensional trademarks.

It has become clear that the examination of 3D trademark applications cannot be limited to the often incomplete information contained in the application. The knowledge of the relevant public does have a role to play, but it is not unlimited.

It was also clarified that "collecting" different forms of protection for the same product is not in itself excluded. If the specific characteristics of a given product fulfil the conditions for several forms of protection, there is no obstacle to obtaining parallel protection (e.g. a 3D trademark in addition to a design).

Thus, although the tale of the Gömböc trademark application did not have a happy ending, it holds important lessons to consider in future applications.

¹ https://euipo.europa.eu/eSearch/#details/designs/000677091-0001
² https://euipo.europa.eu/eSearch/#details/designs/000677091-0001
³ Act XI of 1997 on the Protection of Trade Marks and Geographical Indications

author: Márk Kovács